ITC Monthly Wrap-Up: August 2023 | Fish & Richardson

In August 2023, one complainant filed a new complaint for a violation of Section 337 in the International Trade Commission. Specifically, on August 22, NJOY, LLC, filed a complaint against JUUL Labs, Inc., in Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, Dkt. No. 3691.

The Commission also instituted four new Section 337 investigations in August:

1. Certain Icemaking Machines and Components Thereof, Inv. No. 337-TA-1369 (assigned to Chief Administrative Law Judge Cheney);
2. LED Lighting Devices, LED Power Supplies, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1371 (assigned to ALJ Hines);
3. Certain Power Converter Modules and Computing Systems Containing the Same, Inv. No. 337-TA-1370 (assigned to ALJ Moore); and
4. Certain Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, Inv. No. 337-TA-1368 (assigned to ALJ Hines);

This ITC Monthly Wrap-Up reviews a Commission opinion that addresses two issues concerning the scope of its authority. Certain Bio-Layer Interferometers and Components Thereof, Inv. No. 337-TA-1344, Comm’n Op. (Aug. 24, 2023) (“Op.”).

First, the Commission concludes that it has the authority to correct errors in patent claims. Op. at 25-28. The respondent, Gator Bio, Inc., argued that the Commission lacked the authority to do so because the Commission is a “creature of statute,” and section 337 does not explicitly grant the Commission any such authority. Id. at 26. According to Gator Bio, this lack of statutory authority stands in contrast to Congress’ enactment granting the United States Patent and Trademark Office the power to correct patents. Id. at 26-27 (discussing 35 U.S.C. §§ 254-56).

The Commission rejected these arguments, reasoning that the Commission’s power to correct claims flows from its well-established authority to construe claim language. Id. at 27-28. The Commission explained that it wields the same power to correct obvious errors in patent claims as that wielded by District Courts. Id. at 26-27; Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) (“[T]he Supreme Court [has] held that, in a patent infringement suit, the courts could properly interpret a patent to correct an obvious error.” (Citing I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 441-42 (1926))).

Second, the Commission concludes that the Office of Unfair Import Investigations may assert indefiniteness challenges that a respondent is barred from asserting under the doctrine of assignor estoppel. Op. at 28-29. Assignor estoppel “deal[s]with inconsistent representations about a patent’s validity.” Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298, 2304 (2021). “The assignor is not at liberty to urge [invalidity] in a suit upon his own patent against a party who derives title to that patent through him.” Id. (cleaned up). Here, the founder and chief technical officer of respondent Gator Bio, who was also an inventor named on one patent-in-suit, had allegedly assigned that patent to the predecessor-in-interest of the complainant, Sartorius Bioanalytical Instruments, Inc. (“Sartorius”). See, e.g., Complainant’s Petition for Review of Order No. 27, Doc ID No. 800068, at 3-4 (July 10, 2023).

During claim construction, Sartorius argued based on those facts that Gator Bio was estopped under the doctrine of assignor estoppel from arguing that claims of that patent are indefinite. Claim Construction Order, Order No. 16, Doc ID No. 797546, at 10-11 (May 31, 2023). ALJ Hines explained that she did not need to decide the assignor estoppel question because OUII was independently asserting the same indefiniteness theory. Id. Seeking review from the Commission, Sartorius argued that permitting OUII to assert invalidity theories that a respondent is barred from asserting “effectively eviscerate[s]” the doctrine of assignor estoppel. Op. at 28 & n.9. The Commission rejected this argument, however, because “OUII is an independent party in section 337 investigations, whose role includes advocating independent positions before the Commission.” Id. at 29.

This opinion highlights some of the similarities and differences between the Commission and District Courts. On one hand, the Commission generally has the same power to construe claims as a District Court presiding over a patent case. On the other hand, the Commission is unique in that some of its investigations involve a neutral third party—OUII—empowered to advocate its own positions.

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